Navigating Potential Patent Prosecution Minefields

In the world of patent prosecution, every word, act, or omission can matter. In Elekta Ltd. v. Zap Surgical Systems, Inc., Appeal No. 2021-1985 (Fed. Cir. Sept 21, 2023), the Federal Circuit affirmed a finding that a patent's prosecution history implicitly supported a motivation to combine prior art references from different fields. The implicit support included the patentee's submission of an Information Disclosure Statement (IDS) that cited references in a field otherwise unrelated to the claimed invention. 

As this case illustrates, it is crucial that patent applicants and patent practitioners tread carefully throughout all aspects of patent prosecution, as failing to do so can inadvertently create a prosecution history record that could negatively impact the application or eventual patent. 

Notwithstanding 37 CFR 1.97(h) stating that "[t]he filing of an [IDS] shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability," some key strategic considerations can include:

1. Clarify Intent When Citing References in an IDS: 

   When submitting an IDS, patent practitioners should consider drafting an explicit statement emphasizing that the citations are not an admission that the references come from a related or directly applicable field to the invention and that the references are being cited merely as a precautionary measure. Including a cover sheet with each IDS to reference 37 CFR 1.97(h) may be sufficient.

2. Active Response to Examiner's Reference Citing:

   If an examiner cites a reference from an entirely different field of technology, it's vital not to remain silent and actively respond on the record. This response should include an explanation of why the cited reference is not applicable or combinable. Laying the foundation for this argument can help maintain separation from references in unrelated fields.

3. Consistent Non-Admission Stance: 

   Even if rejections are eventually overcome on other grounds, it's crucial to reiterate for the record that no admission is being made regarding the applicability of the cited art. This consistent stance helps to safeguard against any potential future misinterpretations.

4. Crafting Tailored Disclaimers and Statements:

   Drafting tailored disclaimers and statements is essential to avoid implying compatibility between unrelated references. These statements should strike a delicate balance between preventing unintended admissions and maintaining a clear and consistent stance.

To protect your intellectual property and avoid any unintentional implications, it's imperative to adopt a thoughtful and strategic approach throughout the patenting process and keeping the implicit record in mind can help better safeguard claimed inventions .